Omni MedSci, Inc. v. Apple Inc.
- Yvonne Rogers
- 4:19-cv-05673
- U.S. District Court · Northern District of California
- 3
In Omni MedSci v. Apple, Judge Rogers denied Apple reconsideration leave and ruled on related sealing and amicus requests.
Apple’s request for permission to seek reconsideration was denied, leaving the earlier denial of its subject-matter jurisdiction challenge in place. The order also affected the parties’ and the Regents of the University of Michigan’s sealing and amicus requests.
What happened
In Omni MedSci, Inc. v. Apple Inc., Apple asked the court to reconsider an earlier denial of its challenge to subject-matter jurisdiction. Apple argued that an agreement involving Mohammed Islam and the University of Michigan had already assigned certain inventions to the University, leaving Islam without the required legal interest to sue on the patents.
The court found no serious failure in the earlier decision. It said the agreement’s use of “shall be” ordinarily showed a promise to assign inventions in the future, not an immediate assignment. The court also noted that the earlier court had considered the agreement’s language, including its description of assignment conditions and its lack of words showing a present transfer.
Judge Yvonne Gonzalez Rogers denied Apple’s request for permission to seek reconsideration. The court granted in part Apple’s motion to seal information concerning the University of Michigan, granted Apple’s request to seal the earlier court order and related papers, denied the Regents of the University of Michigan’s request to file an amicus brief, and granted the Regents’ motion to seal as moot.
The detailed version
- Omni MedSci, Inc. v. Apple Inc. · No. 4:19-cv-05673
- Yvonne Rogers
- Nov. 25, 2019
Background
The case was transferred from the Eastern District of Texas to the Northern District of California on October 2, 2019. Before the transfer, the Texas court denied Apple’s motion to dismiss for lack of subject-matter jurisdiction based on Apple’s argument that Omni MedSci, Inc. allegedly did not own the asserted patents.
Apple then requested permission under Civil Local Rule 7-9(a) to file a motion asking the court to reconsider that earlier ruling. Apple argued that the Texas court had failed to consider material facts and controlling law when it interpreted an agreement between Omni’s founder and president, Mohammed Islam, and the University of Michigan, where Islam worked when the invention was made. According to Apple, the agreement immediately assigned inventions made with University resources to the University. Apple argued that because the University had not released its rights in the patents, Islam lacked standing to bring the lawsuit.
Reconsideration standard and analysis
Civil Local Rule 7-9 requires a party seeking permission to request reconsideration to show reasonable diligence and one of three circumstances: a previously unknown material difference in fact or law; new material facts or a change in law after the earlier order; or a manifest failure by the court to consider material facts or dispositive legal arguments already presented.
The court stated that reconsideration is an extraordinary remedy and cannot be used to repeat earlier arguments or substitute for an appeal. After reviewing the earlier order, the law, and the evidence, the court found no manifest failure by the Texas court.
The court explained that the phrase “shall be” in Islam’s agreement ordinarily indicated a promise to assign inventions in the future rather than a present assignment. An agreement to assign in the future does not immediately transfer the invention or eliminate the inventor’s standing to assert the patents. The court also found that the Texas court had properly considered the agreement’s language, including its description of “conditions governing assignment” and its lack of words showing a “present conveyance.”
Rulings
The court denied Apple’s request for leave to file a motion for reconsideration regarding subject-matter jurisdiction.
The court also granted in part Apple’s motion to seal as to confidential University of Michigan personnel information. It granted Apple’s motion to seal the Texas court’s order and related motions. The court denied the Regents of the University of Michigan’s motion to file an amicus brief and granted the Regents’ motion to seal as moot. The order terminated Docket Numbers 207, 208, 216, 221, and 222.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.